Patents and the Preparation and Prosecution 
of Applications by Applicants Themselves 



A paper read March 8, 1917, before the Examining 
&>rps of the United States Patent Office 



B^' 



GEORGE R. IDE, 

Principal Examiner, Division Thirty-eight, 
U. S. Patent Office 



WASHINGTON. D. C. 
1917 



THC LAW nePORTER PRINTING COMPANY, WASHINGTON, 0. C. 



Patents and the Preparation and Prosectition 
of Applications by Applicants Themselves 

By 

GEORGE R. IDE, 

Principal Examiner, Division 38, 

United States Patent Office. 

[Copyright 1917, by G. R. Ide.] 



A PATENT. 

A patent is a Government grant to an inventor, 
securing to him for the period of seventeen years the 
exclusive privilege of making, using and vending and 
of authorizing others to make, use and vend, any new 
and useful art, machine, manufacture, or composition 
of matter, or any new and useful improvement thereof. 

Patents are also granted for designs but this paper 
is restricted to the consideration of only such patents 
as are referred to in the definition just stated. 

According to Walker on Patents, 4th Edition, para- 
graph 172: 

^'Letters-Patent are documents consisting of 
the grant and the specification; and where draw- 
ings form a part of the appHcation, they also form 
a part of the letters-patent. The grant is a paper, 
issued in the name of the United States, under the 
seal of the Patent Office, and signed by the Com- 
missioner of Patents. It contains a short title of 
the invention, and purports to grant to the 
patentee, his heirs or assigns, for the term of 
seventeen years, the exclusive right to make, use 
and vend the invention, throughout the United 
States and the territories thereof; and it refers 
to the specification for the particulars of the 
invention covered by the grant, and each of the 
three rights granted by letters-patent is a separate 
substantive right." 

8099—1 



MAY2i 1917 



2 

Inventors should study the Patent Laws and the 
Rules of Practice in the United States Patent Office. 

Pamphlet copies of the ^'Patent Laws^^ and of the 
^^ Rules of Practice" may be obtained free of cost upon 
request therefor addressed to the Commissioner of 
Patents. 

The decisions of the Commissioner are published in 
the ^^ Official Gazette," published weekly, and furnished 
to subscribers for $5.00 a year, payable in advance, 
and in the bound volumes of the Commissioner's De- 
cisions, pubhshed annually and sold in law binding for 
$2.00 per volume and in paper, covers for $1.00 per 
volume. Subscriptions to the Official Gazette and copies 
of the Commissioner's Decisions should be addressed to 
the Superintendent of Documents, Government Printing 
Office. 

Throughout this paper reference to the laws is by 
Section number and to the Rules of Practice by Rule 
number. 

Decisions of the Commissioner are referred to in the 
Official Gazette by the title of the case, and the Volume 
and page, as: Branna, 97 O. G., 2533, and in the Com- 
missioner's Decisions by title of the case, year and page, 
as, Branna, C. D., 1901, 232. 

PATENTEES. 

To ascertain who may obtain a patent for an inven- 
tion reference may be made to Section 4886 of the Re- 
vised Statutes, which provides that: 

'^Any person who has invented or discovered 
any new and useful art, machine, manufacture 
or composition of matter, or any new and useful 
improvements thereof, not known or used by 
others in this country, before his invention or 
discover}^ thereof, and not patented or described 
in any printed publication in this or any foreign 
country, before his invention or discovery thereof, 
or more than two years prior to his application, 
and not in public use or on sale in this country 
for more than two years prior to his application, 
unless the same is proved tq. have been abandoned, 

©CI.A467105 



may, upon payment of the fees required by law 
and other due proceedings had, obtain a patent 
therefor." 

And to Section 4887 which, in part, provides that: 

^'No person otherwise entitled thereto shall be 
debarred from receiving a patent for his invention 
or discovery, nor shall any patent be declared 
invalid by reason of its having been first patented, 
or caused to be patented, by the inventor or his 
legal representatives or assigns in a foreign 
country, unless the application for said foreign 
patent was filed more than twelve months, in 
cases within the provisions of Section forty-eight 
hundred and eighty-six of the Revised Statutes, 
prior to the filing of the application in this country 
in which case no patent shall be granted in this 
country." 

And "^o Section 4923 which provides that : 

'^ Whenever it appears that a patentee, at the 
time of making his application for the patent, 
believed himself to be the original and first in- 
ventor or discoverer of the thing patented, the 
same shall not be held to be void on account of 
the invention or discovery, or any part thereof, 
having been known and used in a foreign country 
before his invention or discovery thereof, if it 
had not been patented or described in a printed 
publication." 

Such patent or printed publication if published in any 
country prior to the invention by the applicant is a bar 
to the grant of a patent in this country, but not so if the 
apphcant made the invention prior to the date of the 
patent or printed publication unless the date of such 
patent or publication is two years prior to the date of 
fifing of the application in this countr}^ 

It may be here noted that the date of the completion 
of an invention may antedate the fifing of an application 
by a considerable period of time. 

There are no restrictions to the personality of the 

8099-2 



inventor to prevent him from obtaining a patent for 
his invention except as provided in Section 480, that 
^^all officers and employees of the Parent Office shall be 
incapable, during the period for which they hold their 
appointments, to acquire or take directly or indirectly 
except by inheritance or bequest, any right or interest 
in any patent issued by the Office." 

The applicant may be man, woman or child, of any 
nationality or color. 

The law. Section 4896, even provides for the protec- 
tion of the inventions of insane persons by their legally 
appointed conservators, guardians, or representatives 
and in event of the death of the inventor the patent 
may be applied for by the executor or administrator of 
the estate of the deceased inventor. 

Furthermore, Section 4898 provides that the inventor 
may convey all or part of his interest in an invention t® 
another, as follows: 

ASSIGNMENTS. 

^ 'Every patent or any interest therein is assign- 
able in law by an instrument in writing; and the 
patentee or his assigns or legal representatives 
may, in like manner, grant and convey an ex- 
clusive right under the patent to the whole or 
any specified part of the United States. 

''An assignment, grant, or conveyance will be 
void as against any subsequent purchaser or 
mortgagee for a valuable consideration without 
notice unless recorded in the Patent Office within 
three months from the date thereof." 



The assignment records of patents in the Patent 
Office are open to the inspection of the public and any 
recorded assignment constitutes a notice to the public 
of the contents of such assignment. Anyone desiring 
a fuller knowledge of the Patent Office assignment 
records should consult Mr. Magruder's valuable paper 
entitled "The Records of Assignments of Paper Prop- 



erty'^ read before the Examiners of the Patent Office, 
May 28, 1914. 

^Tatents may be granted and issued to the 
assignee of the inventor or discoverer; but the 
assignment must first be entered of record in the 
Patent Office. And in all cases of an apphcation 
by an assignee for the issue of a patent, the ap- 
plication shall be made and the specification 
sworn to by the inventor or discoverer if he is 
living." Section 4895. 

Rule 26 of the Rules of Practice in the United States 
Patent Office requires that the request of the applicant 
for the grant of the patent to the assignee or to the in- 
ventor and assignee as joint patentees must be embodied 
in the assignment and that the assignment must be 
entered of record at a day not later than the date of 
payment of the final fee; and if it be dated subsequently 
to the execution of the application it must give the date 
of execution of the application, or the date of fifing, or 
serial number, so that there can be no mistake as to the 
particular invention intended. 

It is important to particularly note the provisions of 
Rule 186 relating to assignments: 

^^No instrument or writing will be recorded 
which is not in the Enghsh language and which 
dpes not, in the judgment of the Commissioner, 
amount to an assignment, grant, mortgage, lien, 
incumbrance, or license, or which does not affect 
the title (or legal ownership) of the patent or 
invention to which it relates. Such instrument 
or writing should identify the patent by its date 
and number; or, if the invention be unpatented, 
the invention should be identified by a statement 
of the name of the inventor, the serial number 
of the application and the date of filing of the 
apphcation." 

When an applicant has assigned his rights in an ap- 
plication embracing two or more inventions and such 
application is divided it is the uniform practice of the 
Office to apply to the divisional applications assignments 



6 

of the original cases and the Commissioner of Patents 
has said no good reason is seen why the same practice 
should not be applied to subsequent applications for the 
same subject-matter by the same inventor. Wurtz, 120 
O. G., 2441. 

^'It is a firmly established rule that a part owner of 
a patent has a legal right to convey to others the right 
to make, use and vend the invention without the con- 
sent of his co-owners." Lalance Grosjean Manufactur- 
ing Co. vs. National Enameling Co., 108 Fed. Rep., 77. 

'^An assignee of a half interest can not prosecute the 
application to the exclusion of the inventor; but, on the 
contrary, the inventor can prosecute it to the exclusion 
of every one save the assignee of the entire interest.'' 
113 0. G., 850; C. D., 1904. 

^^An assignee of an equitable interest in an invention 
has the right to inspect the file and obtain copies of the 
same." Hertford, 113 O. G,, 851; C. D., 1904. 

Inventors should carefully note the distinction between 
the terms ''joint inventors" and ''joint patentees." 
Joint inventors are persons who have jointly discovered 
and developed an invention. Joint patentees are persons 
who are joined in the grant but who were not joined in 
discovering and developing the invention. 

The term "joint inventors" does not properly belong 
to an inventor and one who has received a grant of a part 
interest in the invention. The inventor and the assignee 
may become joint patentees (Section 4895). 

INFORMATION FOR CORRESPONDENTS. 

All business with the Office should be transacted in 
writing in comphance with Rules 1, 2, 8, 9 and 10 of the 
Rules of Practice. 

To avoid delay in obtaining information from the 
Office, applicants should particularly note and comply 
with the requirements of Rule 8. 

When a letter concerris an application, it should state 
the name of the applicant, the title of the invention, the 
serial number of the application and the date of filing 
the application. Rule 9. If the letter is in response to 
an examiner's action on the case the letter should refer 



to such action by the words ^'in response to the Office 
Letter of ... " and to further facihtate correspond- 
ence, in response to an examiner's action the letter should 
refer to the examiner's division by the caption — '^Before 
the Examiner in Division . . .-" 

Applicants should preserve lineal and verbatim copies 
of all papers filed in the Office to facilitate making amend- 
ments and corrections. 

The Office can not respond to inquiries as to the novelty 
of an alleged invention in advance of the filing of an 
application for a patent, nor to inquiries propounded 
with a view to ascertaining whether any alleged im- 
provements have been patented, and, if so, to whom. 
Rule 14. Should the inventor desire to ascertain what 
has already been done by predecessors in a certain line 
of invention he can purchase a ^^Classification Index" 
from the Commissioner of Patents at a cost of twenty- 
five cents. He can then obtain from the Commissioner 
an estimate of the cost of all of the patents in a selected 
class or sub-class of inventions or he may order any 
number, as, the last ten of the patents granted in that 
particular class or sub-class, the cost of which will be 
five cents each, payable in advance. A study of these 
patents will generally give the inventor a fair idea of 
the state of the prior art and will also furnish him with 
examples of the character of drawings and specifications 
required and the nature of what his claims should be. If 
he does not wish to purchase a copy of the Classification 
Index, he may write to the Commissioner asking for an 
estimate of the number of patents relating to his par- 
ticular invention, describing it in general terms, as — 
spring jaw rat traps, rotary egg beaters, disk harrows, 
etc., and after such information has been obtained he 
may purchase as many copies of such patents as he 
desires. 

'^The Office can not act as an expounder of the patent 
law, nor as counselor for individuals, except as to ques- 
tions arising within the Office." The Office can not 
undertake to advise an inventor whether his invention 
infringes, or, if patented, whether his patent is infringed 
by others. Such questions are for the courts to decide 



8 

when the questions are properly brought before them 
for decision. 

'^Of the propriety of making an apphcation 
for a patent, the inventor must judge for himself. 
The Office is open to him, and its records and 
printed drawings pertaining to all patents granted 
may be inspected either by himself or any attorney 
or expert he may call to his aid." Rule 14. 

.Since this paper is prepared for -the assistance of in- 
ventors who desire to prepare and prosecute their ap- 
plications for patents without the assistance of an 
attorney, reference will not be herein made to attorneys 
except to say that although an applicant or an assignee 
of the entire interest may prosecute his own case, he 
is advised, unless familiar with such matters, to employ 
a competent patent attorney, as the value of patents 
depends largely upon the skilful preparation of the 
specification and claims. 

The Office can not aid in the selection of an attorney. 



-^ THE APPLICATION. 

16s 

"A complete application comprises the first- 

fee of Sh5.00, a petition, a specification, and oath; 
and drawings, when required.'' Rule 30. 

''An application will not be placed upon the 
files for examination until all its parts shall have 
been received." Rule 31. 

When a complete application has been filed in the 
Application Division of the Office, it is given a serial 
number in its regular order and the applicant is notified 
of its serial number and its date of filing. A record of 
the application is made in the Application Division to 
identify the application and the division to which it is 
sent for examination. 

The examination of the application on its merits is 
made in the Examiner's division in accordance with the 
provisions of Section 4893. 

All the papers of a complete application should be 



attached together and deposited in the Office at the 
same time; otherwise a letter must accompany each 
part accurately and clearly connecting it with the other 
parts of the application. 



STATUTORY REQUIREMENTS OF APPLICATIONS. 

The Statutes require a written application comprising 
a specification and claim: 

' 'Before any inventor or discoverer shall receive 
a patent for his invention or discovery, he shall 
make application therefor, in writing, to the Com- 
missioner of Patents, and shall file in the Patent 
Office a written description of the same, and- the 
manner and process of making, constructing, com- 
pounding and using it, in such full, clear, concise 
and exact terms as to enable any person skilled 
in the art or science to which it appertains, or 
with which it is most nearly connected, to make-, 
construct, compound and use the same; and in 
case of a machine, he shall explain the principle 
thereof, and the best mode in w^hich he has con- 
templated applying that principle, so as to dis- 
tinguish it from the other inventions; and he 
shall particularly point out and distincth^^ claim 
the part, improvement, or combination which he 
claims as his invention or discovery. The specifica- 
tion and claim shall be signed bv the inventor." 
Section 4888. 

To properly prepare a specification and claims re- 
quires a thorough knowledge of the Patent Laws and 
Office Rules of Practice and skill in writing clear, tech- 
nical descriptions of inventions. These qualifications 
are acquired by specification A\a-iters only by long study 
and constant practice. 

The preparation of an application is the subject- 
matter of Rules 30 to 55. 

The requirements of a petition are stated in Rule 33 
and perhaps the best way of preparing a satisfactory 
petition is by following the proper form from the Ap- 



10 

pendix of Forms. It will be noted that there are seven 
forms given and of these seven but one is the proper 
one to be copied. 

^'It sometimes happens that the petition does not 
refer to or identify a specification. Such a petition is 
defective." Mason, 43 O. G., 627; C. D., 1888. 

'^It (the petition) does not itself disclose the in- 
vention, and is therefore incomplete unless it refers to 
some paper which does disclose it." Buddington, 84 
O. G., 1728; C. D., 1898. 

SPECIFICATION. 

By referring to the forms for a specification given in 
the Appendix of Forms published in the Rules of Prac- 
tice, it will be observed that all specifications begin 
witl) the set or formal words '^To all whom it may con- 
cern:" followed by a paragraph constituting a formal 
preamble which should be copied verbatim, with the 
blanks filled in, and the proper title of the invention sub- 
stituted for that given therein. 

All the requirements of Rules 34 to 40, inclusive, of 
the Rules of Practice should be closely stuided and 
observed in the preparation of the specification. 

The full first name of the applicant should be given in 
the preamble and if the first name resembles an abbrevia- 
tion of a well known name,^as Fred or Jack, or a diminu- 
tive form of a name, as Harry or Johnnie, the oath or 
affidavit of invention should have added to it a state- 
ment that the first name as given by the applicant is 
his full first name. 

''The form of applicant's name should appear the 
same in the different places in the papers constituting 
an application. Where different forms appear, one of 
them presumably a corruption or nickname, an affidavit 
will be required stating which is the correct form of the 
applicant's name. Where the incorrect form appears in 
the preamble, correction may be made by amendment. 
Where the abbreviated form or nickname appears in the 
signature, the patent may issue after filing of the affi- 
davit above referred to." Clark, 124 O. G., 910; C. D., 
1906. 



11 

^^ Where a foreigner declares his intention of becoming 
a citizen of this country, he remains a citizen of the 
foreign country until his citizenship of this country 
becomes effective.'^ Rhodes, 105 O. G., 1261; C. D., 
1903. 

Following the preamble there should be a general 
statement of the object and nature of the invention. This 
should, in a few well-selected words, state in general 
terms the purpose of the invention and in what it con- 
sists, see examples in the "Appendix of Forms" before 
referred to. 

'^A statement of invention should not be made in a 
specification which amounts practically to a mere 
repetition of the claims in different language. '^ Edwards, 
137 0. G., 1711; C. D., 1908. 

In recent years it has become customary to reduce the 
statement to a mere formality such as: 

"The invention consists in the construction 
and novel combination and arrangement of parts 
hereinafter fully described, illustrated in the ac- 
companying drawings and pointed out in the 
claims hereunto appended." 

Such statement appears to be suJB&cient since the courts 
look to the claims for the definite statement of the inven- 
tion. 

If the invention is capable of illustration the statement 
of invention in the specification should be followed by a 
brief description of each of the several figures of the 
drawing. 

Then should follow a detailed description of the inven- 
tion with reference to each of the several parts by a 
reference numeral applied to such part in each of the 
several figures of the drawing. If the reference numeral 
be applied to the part it represents in each of the several 
figures of the drawing, it will greatly assist in reading 
and understanding the drawing. 

The detailed description should start with the frame- 
work, if the specification be that of a machine, and work 
towards the details. Everything necessary to a clear 
understanding of the invention should be described refer- 
ring in the specification to the parts of the drawing by 



12 

reference numerals and no important part, of the inven- 
tion should be overlooked. But it is not necessary to 
mention every bolt or connection, nor should dimensions 
be stated unless essential. 

At the end of the detailed description in the specifica- 
tion should be the words ^'I claim" followed by one or 
more formal claims and the signature of the inventor. 

Rule 34, founded upon section 4888, requires the 
description ^Ho be in such full, clear, concise terms as to 
enable anj^ person skilled in the art or science to which 
the invention or discovery appertains or with which it 
is most nearly connected, to make, construct, compound 
and use the same." 

By persons skilled in the art is meant persons having 
the usual or expected skill of those engaged in that art. 
Not those having the highest skill, but those having the 
average skill and intelligence of persons engaged in the 
business to which the art relates. 

'^A patent is addressed to those having a' 
peculiar and technical knowledge of the subject." 
Webster Loom Co. vs. Higgins, 105 U. S., 580; 
54 0. G., 388; CD., 1888. 

''If the description of a patent be so vague and 
uncertain that no one can tell, except by inde- 
pendent experiments, how to construct the pat- 
ented device, the patent is void." De Lamar vs. 
De Lamar Mineral Co., 54 C. C. A., 272; 117 
Fed. Rep., 240. 

One would not be required to describe his invention in 
the glass maker's art in such terms as to be understood by 
those engaged in felt hat making, or vice versa, although 
there might be many engaged in the hat making art who 
would understand a clear specification of the invention 
in glass making. The terms used by the glass maker 
might be familiar to the ears of glass makers generally, 
yet strange and unintelligible to the hat maker. 

''The specification must set forth the precise inven- 
tion for which a patent is solicited, and explain the 
principle thereof, and the best mode in which the appli- 
cant has contemplated applying that principle, in such 



13 

manner as to distinguish it from other inventions/' 
(Rule 35.) 

The specification should not merely define in general 
terms the type to which the invention relates but should 
direct the description to just what has been invented by 
the applicant. The prior art is presumed to be known 
to those skilled in the art, and to describe in a specifica- 
tion what is already known is not the purpose of a 
specification. Sometimes it is permissible to refer 
briefly to the prior art for the purpose of more clearly 
bringing out by comparison the distinction between the 
applicant's invention and the prior art but the main 
reliance for the distinction should be the full, clear and 
distinct description of what the applicant has invented. 

''It is not necessary to state what others have failed to 
do, but merely what the applicant has done. If the in- 
vention is a pioneer, it will receive a liberal construction 
because of that fact, if claimed, whether or not a state- 
ment to that effect is included in the descriptive part 
of the specification. A statement such as, 'Many at- 
tempts have been made to impart drying properties to the 
non-drying fatty oils in combination with pigments, 
but, up to the present time, all such attempts have failed 
and these oils are still unsuitable for use for many pur- 
poses' should be omitted." Blakeman, 98 O. G., 791 ; 
C. D., 1902. 

"A party may in his specification distinguish between 
what is old and what is new, but there is no warrant for 
permitting a party to recite the history of the art as he 
understands it, together with statements as to the dis- 
advantages of the several old forms and the advantages 
of his invention thereover, or to illustrate in his draw- 
ings the old devices which he regards as constituting 
the prior art." Wadsworth, 92 O. G., 1798; C. D., 1900. 

^'Statements should not be included in the specifica- 
tion which are merely laudatory of the applicant's 
invention." Blakeman, 98 O. G., 791; C. D., 1902, and 

"Matter which is of an advertising nature will not be 
permitted." Wellington, 113 O. G., 2218; C. D., 1904. 

The specification should not be verbose, nor should 
it refer to prior art in disparaging terms. Should the 
specification be objectionable on these grounds, it would 



14 

be the duty of the Examiner to require the cancellation 
of such remarks. 

''Under no circumstances should an applicant in his 
specification make derogatory statements as to the in- 
ventions of others; within reasonable limits he may point 
out the advantages of his invention and indicate also 
what he regards as the defects or delinquencies common 
to structures representing the unimproved art." Heyl- 
man, 126 0. G., 1066; C. D., 1907. 

'The Office will not knowingly permit a patent to con- 
tain a false suggestion of fact which may mislead the 
public to its prejudice." Lewis & Ungerer, 106 O. G., 
543; C. D., 1903. 

"In case of a mere improvement, the specifica- 
tion must particularly point out the parts to 
which the improvement relates, and must by 
explicit language distinguish between what is old 
and what is claimed as new; and the description 
and the drawings as well as the claims, must be 
confined to the specific improvement and such 
parts as necessarily cooperate with it." (Rule 36.) 

If the applicant has invented a yieldable pitmian for 
a mowing machine it is not necessary to describe an 
entire mowing machine nor even the specific construc- 
tion of cutter bar with which the pitman is connected. 
It is enough to say that the pitman was designed for use 
in a mowing machine, although not restricted to that 
use since it might be useful in other machines. 

It has been held that where the claims were directed to 
the bearings and mode of connecting the driving device 
of a centrifugal machine the title "Centrifugal Machine" 
did not correctly indicate the nature and design of the 
invention as required by section 4884, Revised Statutes. 

"The specification of a patent is sufficient if it fully 
discloses the principle of the invention and it is not neces- 
sary that the relation of the parts should be stated with 
mathematical exactness." Hancock vs. Boyd & Getty, 
170 F., 600. 

"The discussion of the theoretical result to be attained 
by the use of the invention is not proper matter for a 
patent specification. A specification for a patent should 



15 

be confined to a description of the structure of the device 
and the manner of its use. Such matter, while proper 
for advertising circulars, should not be included in a 
specification which is to form part of a patent." Welling- 
ton, 113 0. G., 2218; C. D., 1904, 564. 

''Where a patent discloses means by which a novel 
and successful result is secured, it is immaterial whether 
the patentee understands or correctly states the theory 
or philosophical principles of the mechanism which 
produces the new result." Van Epps vs. United Box 
Board & Paper Co., 143 F., 869. 

If not inaccurate, the applicant ma^^ use the terms 
with which he is most familiar to describe his invention. 

''It is the policy of the Office to permit an applicant in 
describing his invention to select his own terms of refer- 
ence so long as their use does not lead to ambiguitv." 
Hollis, 86 O. G., C. D., 1899; Petzold, 58 O. G., 1091; 
C. D., 1892. 

"A patentee in describing his invention may assume 
that Avhat is already known in the art is understood and 
"may begin at the point where his invention begins and 
describe what he has made that is new and what it re- 
places of the old." Carnegie Steel Company vs. Cambria 
Iron Co., 99 O. G., 1066; C. D., 1902. 

"The operation of the invention should be set out in 
the specification." Bradford and Chatfield, 152 0. G., 
731; C. D., 1910. 

"Where a specificatoin fails in any material respect 
to make the invention fully known and accessible to the 
pubhc skilled in the art to which the invention relates, 
it is fatally defective, and the patent based upon it ipso 
facto becomes void." The Tannage Patent Co. vs, 
Zahn, 71 0. G., 1161 (1895). 

"When a specification requires to be supplemented by 
experiment and inventive skill, it is fatally defective and 
the patent is void." Id. 

CLAIM. 

"The specification must conclude with a 
specific and distinct claim or claims of the part, 
improvement, or combination which the appli- 
cant regards as his invention or discover5\ (Rule 
37.) 



16 ' 

"A patentee's claim is the measure of his right to re- 
lief, and while the specification may be referred to to 
limit the claim it can never be made available to expand 
it. McClain vs. Ortmayer, 57 0. G., 1129; C. D., 1891. 

''The terms of the claim are coextensive with the 
description of the patent." Perrin vs. Manhattan Ry. 
Co., 69 O. G., 1209 (1893). 

'The true meaning of claims must be gathered by 
comparing them with the context of the specification." 
Celluloid Co. vs. Arlington Mfg. Co., 64 O. G., 1263 
(1893). 

''Where the claims in a patent are not supported by a 
description in the patent, such claims are of no validity." 
Pacific Cable Ry. Co. vs. Butte City Street Rv. Co., 
66 0. G., 1758 (1894). 

Walker says: 

"It is a proper practice to make a generic claim and 
also a specific claim, in an application for a patent on a 
generic invention, even where only one species is de- 
scribed in the specification. In such a case, if the invent- 
or's understanding that his invention is primary turns 
out to be true, both claims will be valid. But, if some in- 
vention is afterwards discovered in the prior art, which 
relegates* the patent to a secondary place, the specific 
claim may stand and be valid, though the generic claim 
is too broad to be maintained." Walker on Patents, 4th 
Ed., sec. 116. 

"A claim should itself clearly set forth the structure 
which it is intended to cover, and not merely by the use 
of reference letters refer to the drawing and specification 
for a disclosure of it. A claim which relies entirely upon 
reference letters to indicate structure is objectionable." 
Osborne, 92 O. G., 1797; C. D., 1900. 

The claim must be complete in itself and definitely 
outline and limit the invention. 

"It is no more permissible on principle to refer to the 
description for some of the limitations which should be 
and are intended to be included in a claim than it is tp 
refer to the description for all of the limitations." Shep- 
ler, 102 O. G., 468; C. D., 1903. 

"If the claim does not include sufficient mechanical 
elements to effect the function stated, it will be rejected 



17 

on the ground that it does not comply with section 4888 
of the Revised Statutes." Hoge, 173 0. G., 1081; C. D., 
1911. 

Nor should a claim be verbose or prolix. 

'^A claim may be so prolix as not to comply wdth the 
requirements of the statute that an applicant ^ shall par- 
ticularly point out and distinctly claim the particular 
improvement or combination which he claims as his inven- 
tion or discovery." lagan, 162 O. G., 538; C. D., 1911. 

^^ Claims will not be allowed merely because they repre- 
sent a multitude of elements all of which do not appear in 
one or two or even more references." Sheppler, 102 O. G., 
468; C. D., 1903. 

The elements specified in claims for combinations 
should be substantive and tangible. 

. '^An 'opening' should not be made a positive or direct 
element in combination claims, for the reason that an 
opening is not a tangible thing. It can exist only in 
connection wdth some other elements. If it is desired to 
describe this element as provided with an opening there 
is no objection to such a course." Davin, 100 0. G., 452; 
C. D., 1902. 

"A claim for an article of manufacture should not, as 
a rule, be defined by the process of producing it; but when 
an article of manufacture is a new and useful thing and 
embodies invention and can not be properly defined 
except by reference to the process of producing it, a case 
is presented which constitutes a proper exception to the 
rule." Painter, 57 O. G., 999; C. D., 1891. Scheckner, 106 
0. G., 765 ;C. D., 1903, 315. 

''Where a claim to an article refers to an etched plate. 
This is not objectionable on the ground that it defines 
the article by the process of making it, since etched 
plates have well-known physical characteristics." 
Scheckner, 106 0. G., 765; C. D., 1903, 365. 

"One can not have a valid patent for a principle or 
law of nature. But, having invented and practically 
exemplified a process for utilizing this principle he is 
entitled to a patent for that process." U. S. Supreme Ct. 
in Tilghman vs. Proctor, 190. G., 859; C. D., 1881, 163. 

"A principle covers every mode, apparatus or process 
that accomplishes the result." Id. 



18 

Claims must not be worded to merely set forth a 
result. They must define a composition, a structure, a 
process or a method. 

'Mt is a well-settled law that a patent can not issue for 
a result sought to be accomplished by the inventor of a 
machine, but only for the mechanical means or instru- 
mentalities by which that result is to be obtained. One 
can not describe a machine which will perform a certain 
function and then claim the function itself and all other 
machines that may be invented by others to perform the 
same function." Gardner, 140 0. G., 256; C. D., 1909. 

''But where a claim distinctly specifies a certain struc- 
ture which is adapted to perform a particular function 
there is no objection to setting that function out in the 
claim." Hoge, 173 O. G., 1081; C. D., 1911. 

''If the claim does not include sufficient mechanical 
elements to effect the function stated, it will be rejected 
on the ground that it does not comply with section 4888 
of the Revised Statutes." Id. 

"An applicant can not be permitted to use in his claims 
terms which are indefinite and general in their meaning 
without such qualifying words as shall make clear what 
is intended to be covered by them and shall be expressive 
of the purpose, location or function of the elements 
intended." Hamilton, 85 O. G., 1742; C. D., 1898. 

"The terms of description used in the claims should 
accuratelv describe the construction disclosed in the 
application." Mueller et al., 118 O. G., 270; C. D., 1905. 

"A claim should not be drawn in an alternative form 
even where the alternative elements are equivalents, but 
should use some broad term of description which will 
include both forms." 

"A claim including a description of an element as 
'brick or the like' is alternative in form and is indefinite, 
since the word 'like' fails to identify the characteristics 
of the substance." Caldwell et al., 120 O. G., 2125; 
C. D., 1906. 

The phrase "brake or locking device" is either alterna- 
tive or so inapt to define the desired construction as to 
be objectionable on the ground of indefiniteness." Leon, 
164 0. G., 250; CD., 1911. 

"To merely state in a claim the function or result with- 



19 

out first including therein the structure by means of 
which the function or result is obtained renders a claim 
vague and indefinite." Kotter, 95 O. G., 2684: C. D., 
1901. 

"A statement of the purpose, result, operation, or 
advantages of a mechanical invention should not be in- 
cluded in the claims, but should be embodied in the 
specification. The claims should be limited to statements 
of structure." Schweitzer, 97 0. G., 1371. 

^'In a combination claim the use of the word ^'means'' 
limited by a statement of function has long been recog- 
nized as the proper method of stating an element of the 
combination." Young vs. Eick, 113 0. G., 547; C. D., 1907. 

''Where the invention claimed is a combination the 
term 'means' followed by a statement of function is 
properly readable on a structure in which such means 
consists of more than one element." Lacroix vs. Tyberg, 
148 0. G., 831; CD., 1909. 

"To imply as elements of a claim parts not named 
therein for the purpose of limiting its scope, so that it 
may be accorded novelty is contrary to a well-settled 
rule of patent law." Fred'k R. Stearns & Co. vs. Russell, 
84 0. G., 1434; C. D., 1898. 

"Where an element is mentioned in a claim and in- 
tended to be included as an elment of the combination 
it is in the interest of clearness and good form to posi- 
tively and directly include it instead of making an indefi- 
nite reference to it." Vincke, 96 O. G., 2061 ; C. D., 1901. 

A claim may be had because it does not set out a com- 
plete combination or because it includes more than is 
necessary. 

"A patent based on an alleged combination which is 
inoperative without the addition of another element is 
-void." Terrant vs. Duluth Co., 39 O. G., 1425 (1887). 

"It is fatal to a patent for a process that a patentee 
claims as essential a step which is unnecessary." Van 
Camp vs. The Maryland Pavement Co., 43 0.*^G., 884 
(1888). 

"It is unnecessary to include in the claim such word^ 
as 'substantially as described' since the law makes the 
description a part of the patent, and therefore the claim 
must be construed with reference to the description 



20 

whether the words are included or not." Shepler, 102 
O. G., 468; C. D., 1903. 

^^The Patent Office in determining the meaning and 
legal effect of a claim regards the presence or absence of 
the words 'substantially as described' as immaterial." Id. 

^'A claim which differs from another merely by the use 
of the words 'substantially as described' can not be per- 
mitted in the patent, since the words impart no definite 
limitation into the claim where used." Id. 

''An applicant should not needlessly multiply claims 
by the inclusion of well-known elements which do not co- 
operate therewith to produce a new result or in any 
manner add to the patentable novelty of the device." 
Griffith, 85 O. G., 936; C. D., 1898. 

"The practice of presenting a needless multiplicity of 
claims of substantially the same scope is to be condemned." 
Kadow, 154 O. G., 1412; C. D., 1910. 

"Where the claims in an application are drawn to 
cover a mechanical structure capable of performing several 
functions and the claims differ from each other only in' 
the statements of function attributed to the device it 
has been held that the claims are substantial duplicates, 
for upon elimination of the statements of function each 
claim would cover the same combination of elements." 
Jacobson, 107 0. G., 1378; C. D., 1903. 

"Where the invention can be clearly defined by means 
of four claims, the presentation of twelve claims is 
objectionable because then the claims are unnecessarilv 
multiplied." Carpenter, 112 O. G., 503; C. D., 1904. 

"Where it appears that one claim includes limitations 
not found in the other, such claims are not duplicates." 
Massie, 113 0. G., 2505; C. D., 1904. 

"An applicant may properly in one case have claims 
covering the principal or essential steps of a process and 
other claims including those steps, together with other 
specific steps which are not absolutely necessary to the 
performance of the process, but which add to its efficiency 
or make its operation more perfect." Oxnard & Baur, 88 
O. G., 1526; CD., 1899. 

If there are more than one claim they should be con- 
secutively numbered. 

"It is to avoid confusion in examining cases that 
claims must be numbered in consecutive or regular 
order." Tuttle, 102 O. G., 1781; C. D., 1903. 



21 

DIVISION. 

^^An applicant is permitted to show several species 
of an invention when the state of the art permits a claim 
to be presented and allowed which is broad enough to 
cover all of the species shown and described." Her- 
reshoff, 106 O. G., 1779; C. D., 1903. 

''He may include in one case generic claims and claims 
to one species, but may not include claims limited to 
different species." Dallas, 106 O. G.,996;C. D., 1903; 
Eagle, C. D., 1870, 137. 

For example : 

''Joints for metal plates have acquired a distinct status 
in art and manufacture and one form may be used as 
a substitute for another. Two forms constitute two 
species of the invention and can not be claimed in the 
same case." Burmeister, 101 0. G., 662; C. D., 1902. 

"Two different constructions for fastening calks to 
horseshoes constitute independent inventions although 
both might be used on one shoe." Rodinbaugh & Laurentz, 
lOlO. G., 1830; CD., 1902. 

DRAWINGS. 

"When the nature of the case admits of draw- 
ings, the applicant shall furnish one copy signed 
by the inventor or his attorney in fact." Section 
4889. 

Formerly the specification and drawing were both 
required by statute to be signed by the inventor, or the 
drawing might be signed by the attorney in fact, and the 
signatures were required to be attested by two witnesses. 
Now, however, by recent amendments to the Statutes 
and to the Rules of Practice in conformity therewith, 
the requirement for witnesses is not made. 

When the invention can be illustrated by drawings the 
formal and technical requirements of the Rules of Prac- 
tice concerning drawings should be strictly observed, and, 
inasmuch as the artistic requirements of patent drawings 
are beyond the ability of most inventors and applicants, 
applicants are advised to employ competent draftsmen 
to make drawings for them. If the services of such are 



22 

not available elsewhere, the Office will furnish drawings 
at cost to the applicant as promptly as the draftsmen can 
make them. 

''The statute requiring a drawing means one showing 
what is described, and a part can not be omitted any more 
thau the whole of it. The question is not whether the 
construction can be understood without a drawing, but 
is whether it can be illustrated. '^ Edgerton, 101 O. G., 
1131; CD., 1902. 

'Tt is a great desideratum of Patent Office drawings 
that they should tell their story to the eye without making 
it necessary to go into the specification for explanation; 
which should' be apparent upon inspection." Sturtevant 
et aL, 108 0. G., 563 ;C. D., 1904. 

''Where the invention relates to the arrangement of 
engines, tanks, receivers, and connecting pipes and valves 
all of known construction, diagrammatic illustration is 
probably clearer than views showing parts in detail." 
Clark, 109 0. G., 2169; CD., 1904. 

"When possible, a drawing should be so complete that 
the purpose and operation of the invention ma}^ be readily 
understood by one skilled in the art by a mere inspection 
of the drawing." Hartley, 97 O. G., 2746; C D., 1901. 

"Where a conventional device is referred to in the 
specification and it does not form part of the invention 
it should either be illustrated in a conventional way, in 
order that any one skilled in the art can understand from 
a mere inspection of the drawings what the device is, or 
if it is illustrated in an unconventional wa}- an amend- 
ment should be made to the specification clearly describ- 
ing the construction and operation of said device." 
Morse, 97 0. G., 2982; C D., 1901. 

"It is not necessary in Patent Office drawings that the 
exact proportions of the parts should be indicated. All 
that is required is that such an operative device be shown 
that one skilled in the art can make and use the same." 
Creveling, 98 O. G., 1708; C D., 1902. 

The drawing must show the structure so completeh' as 
to enable one skilled in the art to construct it. 

"Itr is not sufficient for the purpose of a Patent Office 
drawing that the illustration be such that a person skilled 
in the art could supply the parts not shown; but when 



23 

possible the drawing should be so complete that the pur- 
pose and operation of the machine illustrated may be 
readily understood by one skilled in the art by means 
of a mere inspection of the drawing." Motsinger, 110 
O. G., 601; C. D., 1904. 

^' Where a party discloses two or more forms of some 
of the elements of his invention in the drawings and 
claims the general combination of parts and the specific 
form of some of the elements he should include the pre- 
ferred form of the elements in the figure of the drawings 
illustrating the combination which he wishes to claim, 
so that all claims will read upon the device shown in a 
single figure." Welch, 93 0. G., 2104; C. D., 1900. 

''A modification of the invention should not be shown 
in dotted lines on the same figure which shows the pre- 
ferred form in full lines, but should be shown if at all, 
in separate figures and in full lines." Badger, 97 0. G., 
1696; C. D., 1901. 

''When the application fully discloses the construction 
of the alleged invention which is of general application, 
the illustration of the invention applied to a particular 
use will not be required." Perkins, 142 O. G., 855; C. D., 
1909. 

''The number of sheets of a drawing in an application 
should not be greater than is necessary to clearly illus- 
trate the invention." Roadhouse, 1110. G., 1368; C. D., 
1904. 

"Nor should the drawing include matter which is 
unnecessary and ineffective for a clear understanding 
of the invention claimed." Anderson, 113 O. G., 2504; 
C. D., 1904. 

"There are two principal reasons for the rule requiring 
drawings to be limited to as few sheets as possible 
consistent with a clear showing of the invention; one is 
that it has now come to be a serious problem to find 
space for the storage of drawings, whether they form a 
part of a patent or of an abandoned application, and 
the other is that it is a useless expense to photolithogi^aph 
an unnecessary^ number of sheets of drawings for the 
purpose of attaching the same to patents." Pfautz, 159 
O. G., 489;C. D., 1910. 



24 

OATH. 

Section 4892 requires that the inventor shall make 
oath to certain matters therein mentioned and Rule 46 
further requires that the oath shall be signed by the 
inventor. 

In case of the death of the inventor the application 
and oath may be made by his executor or administrator, 
and in case of the insanity of the inventor the applica- 
tion and oath may be made by his legally appointed 
guardian, conservator or representative. Section 4896. 
(Rule 25.) 

The acknowledgment of the oath before a notary, or 
other proper officer designated in section 4892 and Rule 
47, should be executed shortly before filing the applica- 
tion in the Office. 

The form of the oath should be copied from that 
given in Form No. 18 in the Appendix of Forms in the 
Rules of Practice. Particular attention should be given 
the explanatory footnotes concerning the blanks to be 
filled in in the form. By carefully following the direc- 
tions delay and annoyance will be avoided. 

If the full first name of the applicant resembles an 
abbreviation of a nickname the oath should have added 
to it the words ^^and the first name as given by the 
applicant is his full first name." 

An additional oath will be required under Rule 46 
where the delay in filing the application after the execu- 
tion of the original oath is longer than three weeks in 
addition to the time which may naturally be expected 
to be required in transmitting the papers bv mail to the 
Patent Office. Branna, 97 O. G., 2533; C. D., 1901, 232. 

EXAMINATION. 

On the filing of the application and the paj^ment of 
the filing fee an examination will be made in compliance 
with section 4893, and if any claim is found to be un- 
patentable for any reason whatever, it will be rejected 
under the provisions of section 4903, which also gives the 
applicant the privilege of amending the claim or asking 
for a reconsideration on the merits. 

The order of examination of applications is stated ia 
Rule 63. 



25 

' 'Applications must be examined in regular order; the 
Office can not give one case precedence over others because 
of the apphcant's business arrangements which are de- 
pendent upon a speedv allowance of the patent." Bisch- 
off, 100 0. G., 2603; C. D., 1902. 

In an action on the merits of a case in the examination 
thereof — 

''Rule 66 merely requires that an Examiner in citing 
references shall, if the pertinence of the same is not 
obvious, clearly explain the grounds upon which he has 
rejected the claims. It is necessary only that the 
Examiner's position be made plain upon the record, so 
that the applicant may intelligently amend his claim 
or present his case for appeal. The rule does not require 
that the Examiner shall 'meet' every argument advanced 
by an applicant." Stier, 110 O. G., 599; C. D., 1904. 

"Where the Examiner has clearly and explicitly given 
his reasons for rejection yet admits that the disclosure of 
the references is not in all respects identical with the 
applicant's disclosure, on which the rejected claim is 
based the provisions of Rule 66 have been complied with 
and the issue between the Examiner and the applicant 
should be determined on appeal." Fletcher, 114 O. G., 
545; C. D., 1905. 

"In many cases a mere statement that the claims are 
rejected on specified references is sufficient, in view of the 
character of the invention; but in all cases where refer- 
ences are grouped together it should be clearlj^ stated 
whether the claims are anticipated b}^ each of the refer- 
ences separately or in what manner the references are to 
be combined." Harris, 140 0. G., 756; C. D., 1909. 

"When the pertinency of the references is obvious, 
as w^here the disclosure is simple or includes only the in- 
vention of the apphcant, a detailed application of the 
references is unnecessary." Inman, 160 O. G., 1038; C. D., 
1910. 

"But where an Examiner rejected claims upon an 'old 
way' of doing a thing and upon request of the apphcant 
refused to make a particular citation of this old way or to 
furnish the affidavit required by Rule 66, there is no 
excuse for failure on the part of the Examiner to be 
guided by the Rules of Practice, particularly where the 



26 

language admits of but one construction/' Garms, 93 
0. G., 190; C. D., 1900. 

^' Where an applicant is attempting in good faith to 
further the prosecution of his application the Office should 
give him all reasonable assistance.'' Starr, 106 O. G., 
263; C. D., 1903. 

''If any doubt exists as to the interpretation placed 
by the Examiner upon a feature of the drawing or por- 
tion of one specification, he will furnish an explanation in 
response to a specific request making clear the uncer- 
tainty existing in the mind of the applicant." Lincoln, 
127 O. G., 3216; C. D., 1907. 

AMENDMENTS. 

''When claims are rejected as anticipated by prior 
patents they should be amended, if possible to set out the 
difference between the applicant's construction and 
that shown in the patent; the differences must be 
indicated in the wording of the claim. The patentability 
of claims can not properly be predicated on alleged differ- 
ences of construction whch are not specified therein. 
McNeil vs, Sturtevant, 124 O. G., 2177; C. D., 1906. 

In amending his specification, drawings or claims the 
requirements of Rules 68 to 78 should be observed and 
closely followed. 

The heading of an applicant's letter amending an ap- 
plication should have the name of the inventor, title of 
the invention, serial number, and date of filing placed 
in one corner, at the top of the page, and in the opposite 
corner of the page should be placed the division number 
alid room number, which may be found at the top of the 
Examiner's letters. The applicant's letter should be 
addressed to "The Commissioner of Patents" and 
should open with the clause "In response to the Office 
action of (date) amendment is hereby made as follows:" 

Following the specific directions for amendment should 
be the "remarks," signature of the inventor, and the date 
of the letter. 

"The appHcant when amending his case by canceling 
rejected claims should request that the claims be re- 
numbered consecutively. Should he neglect to do so the 
Examiner may properly so renumber them and the ap- 



27 

plicant should be* notified of the renumbering.'' Tut tie, 
102 O. G., 1781; C. D., 1903. 

^'Amendments to an appHcation should be actually 
signed by the applicant or his attorney with pen and 
ink or equivalent writing material. Amendments signed 
by means of a rubber stamp will not be accepted.'' 
Minehan, 134 O. G., 1298. 

''When there has been an assignment of an undivided 
part of an invention the amendments to an application 
must be signed by both the inventor and assignee." 
(Rule 6.) 

''It is a well-settled practice of the Office that an 
amendment can not be entered in part, since for the 
Examiner to undertake to enter an amendment so far as 
it is responsive and to refuse to enter the remainder 
thereof would lead to endless confusion." Hodge, 173 
O. G., 1079; C. D., 1911. 

*'A substitute specification is objectionable and in 
general should not be filed unless required by the Office 
in view of the number and nature of the amendments to 
the original specification." Oreweiler, 170 0. G., 481 ; 
C. D., 1911, 100. 

REQUESTS FOR RECONSIDERATION. 

"A mere request for second consideration without ex- 
planation or argument, and without 'distinctly and 
specifically pointing out the supposed errors in the 
Examiner's action,' Rule 69, is not sufficient to entitle 
an applicant to reconsideration." Appel, 84 O. G., 1145; 
Krejci, 121 O. G., 1011; C. D., 1906. 

"Should the applicant file a paper containing merely 
such request it would be proper for the Examiner to in- 
form the applicant that the paper is not responsive to 
the Examiner's action and should the proper response not 
be filed by the applicant within the year running from the 
date of the Examiner's previous action the application 
will become abandoned." La France, 105 O. G., 262; 
Busenbenz, 117 O. G., 600; C. D., 1905. 

The action of the applicant should be fully responsive 
to the Examiner's action. 



28 

UNRESPONSIVE AMENDMENTS. 

'^Should an applicant present an amendment canceling 
two of his six rejected claims and substitute others 
therefor and take no action whatever as to the remain- 
ing claims, the action would be considered unresponsive 
and insufficient to save the application from abandon- 
ment." Schmitt andTanody, 121 O. G., 688; C. D., 1906. 

'^ Where the Examiner has made requirements as to 
matters of form and has found that any of the claims 
are allowable, an amendment which does not comply with 
the requirement of matters of form or point out wherein 
they were improperly made is not completely respon- 
sive.'^ Fox, 211 0. G., 955; C. D., 1915. 

AMENDMENTS TO DRAWINGS. 

^' Where an applicant makes claims to a certain feature 
of an invention clearly described in the specification but 
not illustrated in the drawing an amendment to the 
drawing illustrating the feature described and claimed is 
justified.'' 110 O. G., 1428; C. D., 1904, Zwiebel. 

''Where photographic prints of the original drawings 
have been made part of the record, it is permissible to 
make slight changes in the original drawing, but not 
such changes as practically obliterate the identity of 
any of the original figures." Kuhlman et al., 102 O. G., 
229; C. D., 1903. 

Permissible changes in the construction shown in any 
drawing may be made only by the Office and after an 
approved photographic copy has been filed (Rule 72). 
No changes should be made in the drawings until the 
approval of the Examiner of the proposed changes has 
been obtained. 

SUPPLEMENTAL OATH. 

''Where an amendment is filed claiming matter not 
covered by the original statement of invention or claim, 
a supplemental oath should be attached to the amendment, 
since an oath to matter presented for the first time after 
filing is just as important as is the original oath." 
Rurich & Bode, 106 O. G., 765; C. D., 1903. 

"An applicant for a patent may properly file new claims 



29 

in the Patent Office without verification where they are 
isdthin the invention disclosed in the specification and 
drawings and narrower than the original claims.'^ 
Gen'l Elec. Co. vs. Morgan Gardner Electric Co., 168 
F., 53. 

NEW MATTER. 

"New matter can not be inserted in a case by amend- 
ment simply because the invention originally shown is 
inoperative and the amendment mil make it operative." 
(Ex parte Snyder, 22 O. G., 1975; construed) Willits, 
115 O. G., 1064. 

"IVJere clerical or draftsman's errors may be corrected 
where the errors are clear from the application itself; 
but changes can not be made in the application based 
upon allegations of fact not shown in the record." Id. 

''Matter not originally shown in a second application 
can not be entered therein by amendment, although 
shown in a prior application abandoned in favor of the 
latter appHcation." Hagey, 173 0. G., 1081; C. D., 1911. 

''Matter can not be read into a case or inserted merely 
because it was invented before the application was 
filed and was intended to be included." Dow vs. Con- 
verse, 106 0. G., 2291; C. D., 1903. 

"A general statement in the original specification as 
to a modification of the invention does not warrant an 
amendment to the drawing showing a species of the 
invention not originally disclosed." Mothes, 113 O. G., 
1146. 

"The fact that no claim is made to new matter inserted 
by amendment furnishes no good reason for permitting 
it to remain in the case." Id. 

FINAL REJECTION. 

"Where an applicant files an argument traversing the 
action of the Examiner and the Examiner insists upon 
his action without citing new reasons for rejection, a final 
rejection is in order." Casselman, 102 O. G., 230; C. D., 
1903. 

"Where the amendments or reasons presented by an 
applicant in response to an action by the Office do not 
necessitate the citation by the Examiner of additional 



30 

references or reasons, applicant's rights to further prose- 
cution of the appUcation before the Examiner is at an 
end, and the permission of further amendment is within 
the discretion of the Office." Miller, 139 O. G., 730; C. D., 
1909. 

^' Where the Examiner points out certain formal objec- 
tions in his letter finally rejecting the claims of an appli- 
cation the final rejection is not thereby rendered prema- 
ture." Green, 130 O. G., 299; C. D., 1907. 

AMENDMENTS PRESENTED AFTER FINAL 
REJECTION. 

^^ Where after a final rejection an amendment was 
filed directing that the finally rejected claims be canceled 
and presenting new claims, held that a statement that 
neither the applicant nor his attorney had looked for a 
final rejection and in view of the Examiner's action appli- 
cant was willing to take narrower claims was not such a 
showing as required by Rule 68." (Citing Ex parte Miller, 
91 O. G., 1033) ; Dietrick, 174 0. G., 829; C. D., 1911. 

That the importance of features covered by proposed 
claims was previously overlooked is not a sufficient ex- 
cuse for failure to file them before final action. Nettles, 
107 O. G., 541; C. D., 1903. 

That an applicant did not properly understand the 
invention is not a sufficient reason to warrant the ad- 
mission of an amendment after final rejection. Schmidt, 
100 0. G., 2602; C. D., 1902, 327. 

An amendment presenting new claims filed after final 
rejection will be refused admission where the applicant 
has had ample opportunity to present such claims and 
the only excuse given for failure to do so was that it did 
not appear to be desirable until he was convinced that the 
broader claims presented were unpatentable in view of 
the references cited. Lange, 163 O. G., 727; C. D., 1911. 

An applicant will not be permitted after a final rejec- 
tion to file an amendment canceling the original rejected 
claims and inserting in lieu thereof new claims if such 
new claims differ in scope from the original claims and 
are not merel}" the original claims presented in better 
form. Landsing, 96 O. G., 2063; C. D., 1901, 129. 



31 

A party can not demand the admission of an additional 
claim after final rejection as placing the case in better 
forms for appeal, since if it differs from other claims it 
affects the merits. Downing, 100 O. G., 2176; C. D., 
1902, 317. 

SUBSTANTIVE PATENT LAW. 

In preparing claims in an application an applicant 
should know that in the patent law — 

''A combination as claimed is an entirety and dis- 
appears with the removal of one of its elements, and 
therefore it is a stated principle of law that where an 
element of the combination claimed is omitted there is 
no infringement.'' Lane vs. Levi, 104 O. G., 1898; C. D., 
1898. 

''No one is an infringer of a combination claim unless 
he uses all the elements thereof." Cimiotti Unhairing 
Co. vs. American Fur Refining Co., 116 O. G., 1452; C. D., 
1905. 

"Where claims cover a product disclosed in references 
the fact that the references propose to produce the 
product by different processes is immaterial." Pratt, 
224 0. G., 1407; CD., 1916. 

''Under the court decisions the introductory phrase 
is not an element of the combination and does not limit 
the claim to such apparatus." Casler, 90 O. G., 448; 
C. D., 1899. 

The Circuit Court of Appeals has held a claim to a 
grab-hook bad because it included a draft appliance as 
an element of the combination. The grab-hook was new 
but grab-liooks and draft appliances in combination were 
old. The patentee did not invent the combination and 
should not have claimed it. The draft appliance acted 
in the same way as heretofore in the combination; that 
is, the new grab-hook did not act differently in the 
combination from old grab-hooks; hence the combina- 
tion was not the new invention of the patentee. Langan 
V. Warren Axe and Tool Co., C. D., 1911. 

The mere function or effect of the operation of a 
machine can not be the subject-matter of a lawful 
patent but a process is something different. 

"A process is a mode of treatment of certain materials 
to produce a given result. It is an act, or a series of acts, 



32 

performed upon the subject-matter to be transformed to 
a different state or thing. If new and useful, it is just as 
patentable as a piece of machinery. In the language of the 
patent law, it is an art. The machinery pointed out as 
suitable to perform the process may or may not be new 
or patentable, while the process itself may be altogether 
new, and produce an entirely new result. The process 
requires that certain things should be done with certain 
substances, and in a certain order; but the tools to be 
used in doing this msiy be of secondary consequence." 
Cochrane vs. Deener, C. D., 1877, 242; 94 U. S., 78. 

Apph cants unfamiliar with patent laws frequently 
can not understand why their claim is rejected on two or 
more patents, taken together. To such, the decision of 
Assistant Commissioner Newton in Ex parte McCollum, 
as follows, may be of assistance: 

'^When legitimate combination claims . . . are 
rejected on two or more references, the trend of the best 
authorities indicates that at least one of the references 
ordinarily should show the general combination claimed. 
. . . Then if the specific features claimed and shown 
by the other reference or references may be substituted 
without such changes as require invention and perform 
the function intended the two references may be legiti- 
mately combined against the claim; otherwise not. . . . 

Legitimate combination claims are for constructions or 
mechanisms for performing a function, and it is improper 
to reject them on ideas extracted from various references 
unless those ideas are accompanied by constructions 
that may be put together without so changing them as 
to require invention to adapt them to perform the 
desired result. 

In determining the patentability of a claim found only 
-in a plurality of references, it is necessary to consider 
the structural differences specified in the claims, as well 
as their functional difference or result. If the structures 
of the several references can not be combined without the 
exercise of invention, even though the result is old 
the claims should be allowed. If the structures of the 
references may be combined or substituted one for the 
other and the combined function or result is new, 
the claim should be allowed. It is only when both the 
structural features found in the references may be com- 



33 

bined without invention to meet the structure called 
for by the claim and the function or result involves no 
invention that the claim should be rejected." McCol- 
lum, 204 O. G., 1046; C. D., 1914. 

DESCRIBED IN PRINTED PUBLICATION. 

A device is ^^described in a printed publication'^ 
within the meaning of the Revised Statutes, section 
4886, and therefore not patentable as a new invention, 
where it is shown in the drawings of a prior patent. 
Keene et al. vs. New Idea Spreader Co., C. C. A., 230 
O. G., 1185; C. D., 1916. 

The question whether a patented device is the result of 
invention, or only mechanical skill, is one of fact. Id. 

Where the elements of a combination claim were not 
merely old, but in point of equivalency had for years 
been devoted to the same uses in the same art and with 
substantially like results, the combination shows mechan- 
ical skill rather than invention. Id. 

While a patented combination may not be anticipated 
by any single prior patent, such patents showing elements 
of the combination, are a part of the prior art, properly 
to be considered on the question whether invention or 
only mechanical skill was required to make the com- 
bination. Id. 

COMPOSITION OF MATTER. 

Where a claim for a composition of matter gives the 
names of the substances which are to be mixed together 
without stating any relative proportion, so that it 
would require experimentation to determine what pro- 
portions were necessary to secure the described result, 
the claim is void for failure to describe the invention in 
such full, clear and exact terms as to enable a person 
skilled in the art to practice the invention. Panze ^'6^ 
Battle Island Paper Co., 138 F., 48. 

Where the only novelty involved in a device lies in 
the proportions of the parts and the description does not 
set forth these proportions, the patent therefor must be 
invalid for lack of sufficient description. Electro- Dyna- 
mic Co. vs. Westinghouse Electric & Mfg. Co., 191 
F., 506. 



34 

EQUIVALENTS. 

The range of equivalents depends upon the extent and 
nature of the invention. If the invention is broad and 
primary in its cliaracter, the range of equivalents will be 
correspondingly broad under the liberal construction 
which the courts give to such inventions. Continental 
Paper Bag Co. vs. Eastern Paper Bag Co., 136 O. G., 
1297; C. D., 1908. 

IMPROVEMENT IN DEGREE. 

The mere carrying forward of an original conception, 
resulting in an improvement in degree simply, is not 
invention. Keene et al. vs. New Idea Spreader Co., 
C. C. A., 230, O. G., 1185; C. D., 1916. 

CLAIMS OF UNWARRANTED BREADTH. 

Claims broader than an applicant's conception, pre- 
sented for the purpose of covering something different 
than the essential elements of the applicant's idea of 
means would be rejected. 

An applicant will not be allowed claims made broader 
than the essential element of his idea of means by the 
use of indefinite terms or by the omission of things essen- 
tial to his idea as conceived and disclosed. Fritts, 237 
O. G., 737; C. D., 1916. 

APPEALS. 

Should an applicant traverse the propriety of a final 
rejection of his claim by an Examiner he may appeal 
from such rejection to the Examiners-in-Chief as pro- 
vided in Rules 133 to 137. 

INTERFERENCES. 

An applicant, unless he has had previous experience, is 
advised against attempting to personally prosecute an 
interference proceeding should he be advised by the 
Office that his claim interferes with that of another 
applicant. The prosecution of an interference pro- 
ceeding is so technical and complicated as to require the 
services of a competent patent attorney. 

March 8, 1917. 



